Patent Law Final Exam – Part 1

On May 1, 2005, Mr. Suresh received an e-mail from a friend warning against eating with disposable bamboo chopsticks. The problem, according to the e-mail, was that bamboo chopsticks were saturated with cariogenic chemicals to preserve and whiten the material. A solution to the problem immediately came to Suresh based on his job as a dental hygienist using UV LASER technology to whiten and preserve teeth. Suresh surmised that bombarding raw bamboo sticks with a high-intensity UV LASER could accomplish the preservation and whitening goals without the use of problematic chemicals. The next evening, Suresh tested his ideas using the UV LASER at his employer's office (the dentist). That evening, Suresh made six sets of prototype LASER irradiated chopsticks and placed them on a shelf in the employee break-room. Over the next six-months, Suresh would occasionally test the prototypes to see if they retained their color and germ resistance. On a couple of occasions during that time, he even used the prototypes at a Chinese restaurant downtown. His interest then waned in the project for several months.

In December 2006, Suresh was fired. He then decided to move forward with his chopstick business. Unfortunately, by that time, someone else (StickCo) had separately invented the same thing and already had a product on the market (with considerable commercial success). Suresh quickly filed for patent protection and in April 2008, the PTO granted Suresh a utility patent with claims directed to both "a product comprising a UV LASER treated bamboo chopstick" and also "a method comprising treating raw bamboo with a UV LASER in a manner sufficient to whiten and preserve the material". Suresh then sued StickCo for patent infringement.

In the end, it turned out that the e-mail scare was a hoax. Ordinary chopsticks are actually cheaper to produce and safer to use than Suresh's irradiated chopsticks.

Based on the prior state-of-the-art discussed, is Suresh's invention nonobvious?

Does Suresh's former employer have any claim to rights in the invention?

Assume that StickCo can prove an invention date of January 1, 2006. Does StickCo have a credible argument under 35 U.S.C. §102(g) that Suresh's patent is invalid?

Assuming that StickCo's version of the chopsticks infringe Suresh's patent, but that StickCo does not have enough money to pay the damages. What other parties could be held liable for the infringement?

Two other similar products were recently released by another manufacturer: (i) A UV LASER treated chopstick that is dark brown in color and that is also chemically treated; (ii) a chopstick that is treated with a BLUE-VIOLET LASER rather than an ULTRA-VIOLET (UV) LASER. Do either of these infringe Suresh's patent?

Patent Office rules require inventors to provide the USPTO with "all information known to be material to patentability." 37 C.F.R. § 1.56. Did Suresh make a mistake by failing to tell the PTO how he came-up with his invention?

When Suresh filed his patent application, the only LASER he had used was the UV LASER from his dentist's office. However, he was confident that other LASERs would probably work just as well, if not better. (i) In the patent application should he have discussed the dentistry LASER? (ii) What about the other (untested) LASERs? (iii) Could Suresh broadly patent "the use of UV LASER radiation to treat an eating utensil, without being limited to the specific machinery or parts of machinery described in the foregoing specification?"

We often think of patents as intended to encourage innovation. Does the granting of patent rights in situations like this (serendipitous invention) do anything to encourage innovation? You might distinguish between this case and one where the patentee conducted an expensive research and development program before inventing.

Are there other patent law issues that should concern Suresh? (Limit your discussion to at-most two additional issues)?

82 thoughts on “Patent Law Final Exam – Part 1”

I will give it a go, went over it at lunch:
1. Yes, use more than one year prior to filing (dates fuzzy but lookes like app filed post Dec 2006, in public use ~May 2005). R&D exception does not appear to apply for in break room as he did not appear to maintain control. Did another employee actually switch them out? Chain of custody uncertain for periods he was not around. Taking to restaurant maintained control, likely ok could make arguments, but break room kills.
2. Yes, because no indicia presented to suggest using dental UV treatment for chop sticks. A suggestion of success is all you need. No evidence of any kind of suggestion.
3. Likely not unless some kind of (employment) contract. The only evidence of ties to employer is his use of the equipment and while at work. Not reasonable related to his job or duties, not hired as a researcher or to invent, not realted to their business, just not much to tie together, unless a K.
4. Not on evidence presented. Evidence has a granted patent to Suresh and no evidence of even a application for StickCo. 102g interference requires an application by StickCo. At this point, if they file an application, their own prior sales kick them prior to any interference (102b before 102g). Bye, bye.
5. Yes, name someone and mike be colorable. Are the principals behind StickCo using the company as a front? Go after them. Infringement is make, use, or sell, which includes whoever bought from StickCo and techncially the patrons at the restaurant who actually ‘used’ the chopsticks!
6. i) reads under “a product comprising UV laser treateed BAMBOO chopstick” if it is bamboo, material not disclosed. Maybe next claim but more restrictions: bamboo?, did it whiten any?, did it preserve any? ‘Sufficient’ term brings these two factors into play as necessary for claim.
ii) on facts presented BLUE… appears different from UV … laser. On those grounds, not infringing. Need facts on if BLUE… is also considered to be a type of UV laser.
7. Potentially, as the email, if broadly distributed, might be considered a publication. Then it could be considered relevant for 103 determination. However, might be reasonable for the inventor to consider is just an email so courts (as this is already a granted patent) might not consider this important.
8. i. not necessary as he might not have considered that best mode, given it is designed for dentistry and not chop stick production. His choice, his mind, is standard.
ii. if included discussion in specification on other lasers it would have been wise to include as a different independent claim. Do not necissarily want to lose the claims he got.
iii. The call of the question seems to imply could he have claimed using existing specification and for that reading the likely answer is no, evidence of not disclosing other than UV laser so would not have support. However, if modify specification, might have additional independent claim for fibrous eating utensils as there are wooden spoons, forks, knifves.
9. Yes, because samll inventors would otherwise let the idea die away if not incentive. “Serendipitous” inventors save us a lot of money as otherwise to get the same invention we have to wait for some expensive think tank to repeat the serendipitous invention!!! However, first to file makes sense here so that serendipitous inventor does not sit and wait for some expensive lab to repeat and then try to force an interference filing after they file. That seems unfair.
10. Fraud on the patent office. It appears he did not discloss the post-invention activities based on question 1 so he might have committed a fraud on the patent office even if the R&D exception applies. Toss entire patent as invalid. Inventorship? The person who sent the email might be colored as an inventor. Simply pointing out the shortcoming and no more does not meet standard for contributing to conception but considering that litigation is imminent this issue pretty much has to be analyzed as a must prep step. Anyone at dental office help out? No evidence to suggest. Company can not be an inventor so use of equipment not a factor in inventorship.

I have read a few of the comments on the issue of obviousness in the exam question posted on this blog. While I agree that notion of whitening teeth with a laser is known, I am not sure that I agree with the assessment that Suresh’s invention is obvious based on the state of the art. Admittedly, I am new to this field, but I have many years of experience as a scientist. This experience tells me that the composition of tooth enamel and bamboo chopstix are very different and that the use of laser to whiten one may not necessarily work to whiten the other (that is to say, from a scientific standpoint, it is not obvious that this will work and seems like a novel idea worth examining on the chance that it might work and be useful). It seems to me that, based on literature available on the science of tooth whitening and the significant difference between the composition of teeth and bamboo, the application of laser for the purposes of whitening bamboo is not obvious, at least from a scientific point of view. If the science is not obvious to one skilled in the art (me, as a scientist), can one make a successul argument to the USPTO that the invention in question is not obvious as defined by the MPEP and therefore patentable? Please keep in mind in your responses that I am very new to this field and still learning the ropes. Thanks.

Related to my earlier post. Can someone kindly comment on this question:

Isn’t a specifically flagged health risk to a particular feature of a product a “design incentive” or “market force” – which goes into the 103 flexible rule? I’d say so.

Then is there any qualification to the risk, i.e. how legitimate does the risk have to be? I’m not sure what the consensus is on cell phone usage and brain cancer – but I’m pretty sure there has been extensive “media” coverage about this specific health risk about one type of telephone product (the cell phone). For a hypothetical patent application claiming an invention which eliminates the cancer-risks associated with cell phone use, wouldn’t the POSA awareness of this risk cut against the applicant or patentee as far as 103 is concerned? I’m again going to guess yes -> which leads to the analogy that emails alerting POSA @ carciogenic chopsticks serve the similar flagging function as that pertains to the 103 inquiry.

Please critique this, I’m attempting to understand the link between the “flagging @ POSA” of health-risks for product features and innovations targeted at elimination of said risks for a school-related project.

Socius Emeritus: yikes on the cariogenic/carcinogenic boo-boo. Will make sure I don’t make that one at work. All I gotta say about my error on that one is yikes.

I’m not sure I follow your comment about non-cariogenic chopsticks being antithetical to market demand/profit. The chemicals aren’t just stuffed into the chopsticks for no reason, they help in the chopsticks lasting longer in storage – which can make them a preferred good for customers.

If there’s another company selling non-cariogenic chopsticks with the same whitening/preservative effects of the cariogenic compounds, then yes, there’d be no market demand for it, but the facts don’t lead to that assumption.

The 103 inquiry with respect to the email is relevant because the email flags POSA as a design incentive.

Max: But in English law “evidence” is witness testimony, no? Where will the PTO get its witness evidence from?

Max, surely the concept of “evidence” in English law extends beyond mere testimony. Documents and physical exhibits can be evidence, and their nature and relevance to the case might even be self-evident (if you’ll pardon the equivocation), perhaps only requiring testimony to identify them. A notarial deed would even be proof of its contents, would it not?

Well then, consider the prior art to be a series of documents. The documents don’t generally require supporting testimony because we only care about their existence on a particular date (usually appearing on the face of the document) rather than the truth of their contents. On the rare occasion that a document does require supporting testimony (for example as to how a person skilled in the art might understand it), the PTO will accept evidence in the form of sworn declarations by either the examiner or someone on the applicant’s end.

Max: it is “up to the Office to show” that Applicant should not get a patent. Who is it that the Office is showing?

The examiner isn’t exactly doing the showing. The prior art is doing the showing. The examiner is simply weighing the objective evidence before him and making a determination.

I want to assume that your questions are rhetorical, but since you not be lawyer folk, I won’t.

Some observations:

It as been well commented on these boards that the Office is bound to process everything in writing. This would mean that evidence is also reduced to “in writing”.

Clearly, the most prolific evidence of this sort is the written word of patents and publications. In fact, as someone so elegantly pointed out, the Office itself limits the correction process of reexam to those very written word items. Youza can draw your own conclusions as to what this says bouts the level of presumption, but its pretty clear.

Itza also pretty clear who strikes the balance, both in the first instance and all along the path of challenge. As to who is being shown, that be a bit more nuanced, cause in actuality more than one person be bein shown. Of course the primary person bein shown by the examiner’s work is the applicant. That’s why the lunacy of 6’s one word answers flies against the lawl. The examiner must show in clear enough detail to the applicant why the applicant does not deserve a patent, clear enough so’s that the applicant can decide to pursue or not. O course, a smart examiner, much like a smart applicant, writes his stuff so that multiple layers O audience can understand. Ya want both the initial players (applicant and examiner) as well as those possibly reviewing downstream (judges and ordinary kin-folk of jury people) and the general public as well (but only to the point of non-excessive experimentation, minds ya).

Ya see, that’s where the fun be – writing in layers. Writins that appear in the first blush to have the answer (or the observation, as the case may be), but a wealth more in nuances. This be why my main man is king O the boards here – not cause O what he believes, but because how he writes.

It seems that “presumption” does not connote “clear and convincing”, but what about “evidence” as such?

Is Applicant entitled to a patent “unless” the PTO can “prove” that he is not? If that is the case, how does the Office “prove” it? By “evidence” I suppose. But in English law “evidence” is witness testimony, no? Where will the PTO get its witness evidence from? The Examiner, I suppose. So, when it comes to striking a balance, and weighing the “preponderance” of all that evidence, who does that? The Examiner weighs his own evidence I suppose and, after that, the BPAI, I suppose.

ping writes that it is “up to the Office to show” that Applicant should not get a patent. Who is it that the Office is showing? The CAFC?

Lex: There doesn’t have to be–there is a presumption of “non-obviousness” caused merely by filing an application.

can you clarify please, there’s a presumption of validity, and therefore non-obviousness, for issued patents, i’m not sure what you mean by “presumption caused merely by filing an application”? Which court or agency presumes non-obviousness by the mere filing of an app?

the fact is that somebody *did* find a way to make the product without property X — the folks in the prior art (making the perfectly safe chopsticks).

The perfectly safe chopsticks are like the perfectly safe nuclear power plant. The Property X the customers are looking for isn’t “safer”, it’s “feels safer”. That’s “not chemically treated”, as opposed to “safer than Brand X”. That is not a Property X that exists in the prior art, and the novel aspect is what accounts for the impressive sales figures.

There is no presumption of “non-obviousness” caused merely by writing the words “New formulation” or “Does not have property X!” on a product, at least not legally speaking. It’s pure marketing B.S.

Yes, but in this case it’s pure marketing BS that draws the buyer’s attention to the novel feature of the article, and the customer is deliberately buying that novel feature in preference to the prior art.

You also have to bear in mind that there’s objective evidence that the public (or some subset of it) would be receptive to that exact marketing BS, if only somebody could figure out how to design a product that supports it. This is virtually a perfect example of when secondary considerations really do suggest non-obviousness, because nobody has yet taken advantage of the predictable commercial success for want of a suitable product.

Just like in my power plant hypo. It doesn’t matter. If a product demonstrably sells because “New formulation! Does not have property X!” is printed on the package, and there’s documented evidence of a pre-existing aversion to property X that suggests a desire for any new formulation lacking property X, and nobody has previously found a way to make the product without property X, the new formulation is presumptively non-obvious.

See bold text. This is one of the points where your argument crumbles because the fact is that somebody *did* find a way to make the product without property X — the folks in the prior art (making the perfectly safe chopsticks).

Also, you missed the point of my comment. There is no presumption of “non-obviousness” caused merely by writing the words “New formulation” or “Does not have property X!” on a product, at least not legally speaking. It’s pure marketing B.S. It has absolutely nothing to do with any “invention,” yet it has everything to do with commercial success. That’s my point.

Just like in my power plant hypo. It doesn’t matter. If a product demonstrably sells because “New formulation! Does not have property X!” is printed on the package, and there’s documented evidence of a pre-existing aversion to property X that suggests a desire for any new formulation lacking property X, and nobody has previously found a way to make the product without property X, the new formulation is presumptively non-obvious.

It’s tantamount to offering a cash reward for developing a new formulation without property X. There’s money on the table. If it were obvious how to get that money, someone would have done it already.

It’s apparent that there’s a latent demand for an alternative method of whitening chopsticks that doesn’t exist yet

Indeed. The demand is based on a myth, and so is the commercial success. The “invention” is no more responsible for the commercial success of the product than if someone just wrote “New formulation! Safer than Brand X!” on the package.

I believe you do understand correctly. Utility doesn’t mean you’ve invented the best available way of doing something. Utility simply means it works for its intended purpose (and delivers any specific advantages you’re foolish enough to promise in the spec).

Malcolm: if the sales of a patented device are impressive, is there any way that those sales could not be considered evidence of non-obviousness?

Of course there is. If it turns out that people really don’t care how their sticks are made, and they only buy the one in the prettier box or the one that’s marked down this week, or if your marketing campaign makes it fashionable to use chopsticks generally, or if your main customers are restaurants who buy bulk from you because of a pre-existing supplier relationship, none of the resulting commercial success is any indication of non-obviousness.

The commercial success in this chopstick hypo is the sort of thing that even I’d be willing to accept as evidence of non-obviousness, assuming that the belief indicated by the e-mail is sufficiently widespread. It’s apparent that there’s a latent demand for an alternative method of whitening chopsticks that doesn’t exist yet, and the logical implication is that someone would have filled that niche already had it been obvious how to make the product.

I guess my question for you, IANAE, is: if the sales of a patented device are impressive, is there any way that those sales could not be considered evidence of non-obviousness? The Federal Circuit often manages to disparage such evidence yet according to your analysis, I don’t see how it could ever be done.

Malcolm: If you prefer, consider the irradiated chopsticks to be an improvement of untreated sticks, and the chemically treated sticks to be a completely different product that serves the same single purpose while being cheaper, better, and icky.

I think I get what you’re trying to say.

Chemically treated chopsticks get us from 0 to 10 on some utility scale, (safety, cost of production).

Irradiated chopsticks get us from point 0 to 8 on this same utility scale (less safe, more expensive).

You’re saying that irradiation is an alternative way to get from 0-8 than a superior way which gets us from 0-10, and because it is an alt way, there’s utility.

Amit: You switch from one entity (just chopsticks) to two entities (comparing an improved coal plant, which is inferior to a nuclear power plant).

It was meant to be a new coal plant that is different from old coal plants, but still not the best way of doing the only thing people use coal plants to do.

Malcolm: That’s hardly clear.

They’re not cheaper, they’re not whiter, they’re not more effective at picking up food. Why do you suppose they’re selling so well?

Malcolm: Distaste for nuclear power plants is not relevant to the commercial success analysis.

Of course it is. Nuclear plants are a market alternative to coal plants, and it’s given that they’re better than even the improved coal plant, but people don’t like them anyway.

If you prefer, consider the irradiated chopsticks to be an improvement of untreated sticks, and the chemically treated sticks to be a completely different product that serves the same single purpose while being cheaper, better, and icky.

If you really prefer, think of coal and nuclear plants as two different ways of powering a turbine to generate electricity – one chemical, one by radiation.

IANAE it’s clear that people are buying the new product because of the same difference from the old product that makes the claim novel.

That’s hardly clear.

So what’s your answer in my power plant hypo?

The power plant hypo isn’t analogous. The market choice in your hypo is between the old coal plant and the new coal plant, where the new coal plant is a bona fide improvement. Distaste for nuclear power plants is not relevant to the commercial success analysis.

I like IANAE’s coal/nuclear hypo, but that’s different from an invention of a chopstick in the space of chopsticks.

You switch from one entity (just chopsticks) to two entities (comparing an improved coal plant, which is inferior to a nuclear power plant).

What I’m saying is this is like an inferior coal plant in the space of coal plants, because it is less safe. I’m not sure the facts indicate that the radiated chopsticks have any non-zero utility above the status quo.

Very nice exam questions. I especially like how you set that “shop right” trap. Even though the former employer would likely have “shop rights” in the invention, that is not a “claim to rights in the invention.” Rather, it is merely a defense to infringement. Not to mention the fact that it would be difficult for a dental office to make meaningful use of treated chopsticks in the dental practice.

If nothing else, this discussion demonstrates how incredibly stoopit the so-called secondary factor of “commercial success” as a determinant of non-obviousness.

Of course it is, but that’s not the point. If you’re going to discuss commercial success under the law as it currently stands, it’s clear that people are buying the new product because of the same difference from the old product that makes the claim novel.

Now, if the spec promises a particular utility that the product doesn’t deliver, that’s another story. But those facts aren’t given, and this isn’t the first patent I’ve seen (not even counting design “patents”) where the entire utility is in making a product that consumers irrationally prefer. So what’s your answer in my power plant hypo?

Suppose you invent an improvement to coal power plants that still leaves them objectively inferior to state-of-the-art nuclear power plants, but people want it anyway because they’re irrationally terrified of having a nuclear reactor in the neighborhood. Is that a credible utility? Is that commercial success? I don’t see how anybody could argue otherwise.

The facts here relate an “alleged” improvement to old chopsticks that are, in fact, inferior to the old chopsticks. Unless there are facts that we are no aware of, the “commercial success” is apparently not due to the desirability of the invention but from false advertising about the undesirability of the old product.

If nothing else, this discussion demonstrates how incredibly stoopit the so-called secondary factor of “commercial success” as a determinant of non-obviousness.

It’s a statistical fact, especially for that particular type of information. It is very likely to be brought up in (similarly likely) litigation as a basis of unenforceability, in view of recent caselaw that has been discussed here at length.

Mr. Suresh, please sketch for me the laser pointing at the thing-to-be-whitened that was the inspiration for your invention.

He’s made an alternative product, based on some degree of market aversion to the old product. It doesn’t matter if it’s objectively inferior.

Suppose you invent an improvement to coal power plants that still leaves them objectively inferior to state-of-the-art nuclear power plants, but people want it anyway because they’re irrationally terrified of having a nuclear reactor in the neighborhood. Is that a credible utility? Is that commercial success? I don’t see how anybody could argue otherwise.

Also, regarding question 7, a complete answer to “did Suresh make a mistake” should include a mention that over-disclosure is likely to reduce litigation expense and uncertainty, regardless of where the substantive law on disclosure will ultimately settle. Therefore, Suresh most definitely did make at least a tactical mistake, particularly on these facts that make litigation a distinct possibility.

The chopsticks are patentable only if they are used with a powerful COMPUTER BRAIN.

Which reminds me – returning to the previous discussions of the patentability of DNA, etc., does anyone else find it EXTREMELY ironic that Malcolm Mooney thinks a COMPUTER BRAIN is NOT patentable, but thinks an arbitrary piece (not occuring in nature) of a HUMAN BRAIN is patentable???

I’d say a piece of a human brain is not found in nature, but I’ve seen too many Office Actions, and the content of said OA’s demonstrates otherwise . . .

Willton: Your audience is either (1) the client, who may not be familiar with patent law, or (2) a legal professional, who also may not be familiar with patent law.

I always understood the hypothetical law school exam audience to be a judge who will also be hearing a reasoned argument to the contrary. Even if the question is posed as your client asking for your opinion.

Chop sticks aren’t an item like a pavement or dynamite that they cannot be used but in a public way, so Suresh had means to experiment with his chopsticks in his private residence or lab, as opposed to if he’d invented a new kind of platform or sidewalk which needed public use for testing its durability. Maybe he can argue that use by restaurant patrons is needed to test if the final product serves its end in the expected context, but that context is likely to be deemed commercial and not experimental. It would seem like test-driving for marketing, as opposed to for seeing if the chop sticks serve their end.
His act of leaving the chop sticks in the employee break room is in the confines of his workplace (see Moleculon), one could argue he relinquished “control” over his chop sticks, but likely a weak argument. His testing over 6 mo seems patently experimental, no pun intended, he’s specifically time-testing these sticks for color/germ resistance, needs that time. His Chinese restaurant use is likely commercial, and not experimental, but may fall short of being public. I’m assuming he didn’t sell these chopsticks to patrons, and that the patrons weren’t charged extra for use of these chopsticks. Also, what happened to these chopsticks after they used them, did Suresh exercise control of them after these patrons used them? Were these patrons average Joes off the street? This matters because it informs the public use bar. Key question is what’s Suresh trying to do – perfect the invention, or market it? I’m assuming all this activity occurred over a year prior to the filing date. If its deemed public use, or on sale if he sold the chopsticks at the restaurant, then that’s that for that under 102(b).

2. Based on the prior state-of-the-art discussed, is Suresh’s invention nonobvious?

The email – who was it sent to? Sounds a lot like a mass e-mail, which basically informs a substantial number of people that there’s a product problem, and the contents of the email, warning about cancer in a certain type of chopstick, is motivation enough to enter that market and make a killing by providing a non-cancerous chopstick. So there’s a secondary consideration of a type of market force driving the trigger on this inventive thought process of Suresh. That it ended up being a hoax is interesting, because the market force itself was real, it just happened to be an invalid market force in terms of the benefits to the public. But then this might be the wrong kind of analysis to undertake because there’s no case law I’m aware of which qualifies this secondary consideration of market force/design incentive to be technically valid.
If tomorrow there’s an email rumor that spreads that people want shoes that somehow detect when your feet are about to tire by analyzing blood circulation patterns in your soles, so you can pre-emptively change your posture, or whatever, and it turns out there’s no market demand for it in reality, not sure if that secondary consideration is out the window, or even diluted because that email happened to be a rumor and that there’s really not any demand for it. The essential inquiry is whether Suresh’s inventive step exceeds what would’ve been obvious to POSA, and the email serves as a flag to POSA about an unmet need.
Nonanalogous art of teeth whitening is 103 prior art for the bamboo whitening procedure, In re Wood two-step test will result in conclusion that reference is reasonably pertinent to the particular problem with which inventor is involved (process of whitening in the abstract), the caveat here is if the process of whitening differs in some meaningful way between teeth and bamboos, but given what Suresh did to accomplish his end, there seems to be really no difference. Once the prior art whitening process was problematic, it seems to turn POSA heads toward alternative whitening processes, of which UV is a known process albeit in the tooth area. When I read “whitening” – I immediately thought of tooth whitening, so this could cut against Suresh.

3. Does Suresh’s former employer have any claim to rights in the invention?

Not sure where shop rights come in, Suresh wasn’t hired to invent, he was a dental hygienist. He likely did not sign any assignment agreement as a hygienist, probably could’ve leased a laser, or used one elsewhere, not sure about this one. Unfamiliar with the law here, but my instinct is no. If he signed some boilerplate employment agreement, this could change.

4. Assume that StickCo can prove an invention date of January 1, 2006. Does StickCo have a credible argument under 35 U.S.C. §102(g) that Suresh’s patent is invalid?

Depends when Suresh reduced to practice, and the lag after that. Abandonment is key to this priority fight, Suresh was spurred into filing after being alerted of a competing product, that’s a big negative against him. Suresh’s delay was for neither testing, nor refinement, looks like he just gave up on it and then got back to it after getting fired. Suppressed or concealed work is entirely disregarded in priority analysis – later/resumed activity antedating an opponent’s entry to the field is fine, but that’s not the case here since resumed activity (filing) postdates opponent’s entry.
May be a diligence lapse if Suresh took from May 1 2005 to Dec 2006 for his experiments. Need more facts to analyze this, but sounds reasonable to need 6 mo to see germ effects for chopsticks. One could argue that’s a marketing thing not an experimenting thing.

5. Assuming that StickCo’s version of the chopsticks infringe Suresh’s patent, but that StickCo does not have enough money to pay the damages. What other parties could be held liable for the infringement?

6. Two other similar products were recently released by another manufacturer: (i) A UV LASER treated chopstick that is dark brown in color and that is also chemically treated; (ii) a chopstick that is treated with a BLUE-VIOLET LASER rather than an ULTRA-VIOLET (UV) LASER. Do either of these infringe Suresh’s patent?

Product claim (i) covers product (i) because it claims UV laser treated bamboo chopstick – bamboo is a limitation and maybe if infringing product isn’t bamboo, then its reading this limitation out of the claim, so depends on whether infringing product is bamboo chopstick or some other material. That the chopstick is “also chemically treated” is likely irrelevant, it could be “also” covered in feathers, doesn’t change that there’s an infringing product underneath. The (ii) product is treated with a diff type of laser than UV, and UV is a limitation on both product and process claims. So no literal infringement, DoE analysis then. Depends on whether radiation for UV v. BV is essentially same way.

7. Patent Office rules require inventors to provide the USPTO with “all information known to be material to patentability.” 37 C.F.R. § 1.56. Did Suresh make a mistake by failing to tell the PTO how he came-up with his invention?
Not sure about this. Is it material that he got that email? Is it material that he worked as a dental hygienist, whitening teeth? It’s an analogous art 103 reference, so it seems material, not really sure about this one. If examiner had known about the email (which he probably didn’t know) and about the laser whitening of teeth (which he most probably knew), would he have still granted patent? Bec he probably would’ve known of laser-based tooth-whitening, which is a 103 analogous prior art, I think it might boil down to whether he knew about the email – would he have still granted patent? This is back to the issue of whether there’s a design incentive, which again triggers the interesting issue of this pseudo-incentive, given that the email was a hoax. I think the hoax part of it is completely irrelevant. The reason we ask whether there’s a design incentive is to weed out obvious inventions from POSA perspective, and that’s it. If you come up with a random meaningless demand and lie to POSA that the market wants it, and POSA in some obvious predictable way solves that fake-demand, its still an obvious invention.

8. When Suresh filed his patent application, the only LASER he had used was the UV LASER from his dentist’s office. However, he was confident that other LASERs would probably work just as well, if not better. (i) In the patent application should he have discussed the dentistry LASER? (ii) What about the other (untested) LASERs? (iii) Could Suresh broadly patent “the use of UV LASER radiation to treat an eating utensil, without being limited to the specific machinery or parts of machinery described in the foregoing specification?”

He should have to enable POSA on what kind of laser worked, also for WD to show that he possessed the invention. He didn’t need to specify other untested lasers, he doesn’t have some super enablement burden (although WD is called that). The key question is whether POSA has to do undue experimentation, not just experimentation with other lasers. As for iii, I think enablement and WD are issues here because I’m not sure every utensil of every material whitens upon radiation.

9. We often think of patents as intended to encourage innovation. Does the granting of patent rights in situations like this (serendipitous invention) do anything to encourage innovation? You might distinguish between this case and one where the patentee conducted an expensive research and development program before inventing.

Yeah, serendipitous inventions are like accidents in the neural pathways of random individuals, and these random happy coincidences of neurons firing the right way at the right time need to fire other neurons which remember about the patent system. These bastardized Eureka moments (bastardized compared to rigorous lab work), will trigger memories of the patent system, and translate these neural accidents into real-world work on part of the fortunate brain who has chanced upon this invention. In the absence of a patent incentive system for serendipity, we will filter out lucky inventors because they will let neural tick just die, instead of translate into say the X-Ray. 103 “patentability shall not be negatived by manner in which invention made” is a direct counter to Cuno’s flash of genius requirement.

10. Are there other patent law issues that should concern Suresh? (Limit your discussion to at-most two additional issues)?
He should be concerned about utility in light of the fact that status quo chopsticks are in fact better than what he’s made. He’s essentially made an inferior product, and if utility has any teeth left, this could be a situation for invalidating on that basis given that this is essentially a patent on two steps back from the status quo, particularly given that status quo chopsticks turn out to be safer than Suresh’s.

He should consider reissue to broaden from UV to general radiation, and perhaps the bamboo limitation, but intervening rights might get him.

I don’t really know much of what I’m talking about, but hopefully I got some of the above right.

1. Did Suresh’s post-invention activities trigger 102(b)?
We will never know, because Suresh destroyed his old records in the normal course of his document retention policy. This makes it impossible for StickCo to meet the Federal Circuit’s unfair clear & convincing evidence standard. It’s so unfair!

3.Does Suresh’s former employer have any claim to rights in the invention?
Yes, because the LASER was bought in part with a federal grant, and Suresh’s invention is therefore subject to the Bayh-Dole Act. The legislative history and the structure of the Act make abundantly clear that Congress intended full and exclusive ownership to vest in the dentist. Any assignments to the contrary are void.

That’s what I thought about the test in university too. But, lo, a 100 doeth appear to the righteous!

Well, this is not a test from “university” (I take it you are not originally from the United States). This is a test from law school. In law school (as well as the practice of law), you are expected to explain why.

I could blabber all day but to one skilled in the patent arts all the explanations are more than sufficient. Who is my audience here? Kindergarteners?

Your audience is either (1) the client, who may not be familiar with patent law, or (2) a legal professional, who also may not be familiar with patent law. In either case, your audience is going to want a little more information than just “yes” or “no”.

Your answers fail because each one doesn’t sufficiently explain one or more of (a) what the issue is; (b) what laws are applicable to the issue; and (c) how said laws apply to the issue. Your answers fail basically because you assume way too many things.

“When the right answer to a law school exam appears simple to arrive at, chances are you’re missing a key fact or issue in the question.”

That’s what I thought about the test in university too. But, lo, a 100 doeth appear to the righteous!

“Ironically, any reasoning you’d be likely to give probably would be a waste of everyone’s time, but not for the reason you’re thinking.”

lulz. I gave quite a bit of reasoning in my post for most questions. All of it is valid and proper.

Look, I kno u guis don’t liek peps messin’ up ur tests because you think ur leet. But you’re not. You just spent a lot of time lulzing around with lulzy concepts.

Look, you lawltards, the answer to no. 1 is no because the Fed holds most lulzily that it must analyze the totality of the circumstances and in this case the use by the inventor himself is considered seperate from “public use”. The end.

no. 2 is that the invention is non-obvious because not all elements are present in any art, and furthermore that there is no rationale or TSM to modify the prior art components in the way the patentee did. Oh and some stuff about non-analogous art etc. The end.

no. 4 I might lose a few points on but simply put there is simply no indication that he could meet the reqs of making a 102(g) case. The end.

As to no. 7, he did not make a mistake in failing to disclose how the invention was made because there is no indication that any of it is relevant to patentability of the claims.

The rest have some explanation. I could blabber all day but to one skilled in the patent arts all the explanations are more than sufficient. Who is my audience here? Kindergarteners? The fact that I skip over a lot of childish argumentation you lawlyers <3 is a blessing not a bad thing.

Ping you know I'm still ignoring you until you say something worth responding to. But I will say this: what is to learn? That lawlschool will want me to blab and blab and blab? Fine. I can blab for an hour and give details when it comes actual test time. I don't think they should require it, they should simply have hard problems. But if they insist on being relawltarded then I guess they're the experts at it so I shouldn't be the one to naysay.

If someone who knows the answers and wants to spend an hour setting out all the details then so much the better. Go right ahead. I'll read and learn a bit.

6: I agree, but when the right answer is simple to arrive at why waste everyone’s time?

When the right answer to a law school exam appears simple to arrive at, chances are you’re missing a key fact or issue in the question. Ironically, any reasoning you’d be likely to give probably would be a waste of everyone’s time, but not for the reason you’re thinking.

“In fact, if you go through a very thorough reasoning, the actual outcome will hardly change your grade at all. ”

The same is true where I come from, but on the other hand if you’re good enough to arrive at the proper answer and you put it down then you get full credit unless directed otherwise.

“It’s much better to have a good, well reasoned discussion of the issues with an incorrect conclusion than a “correct” answer with poor reasoning.”

I agree, but when the right answer is simple to arrive at why waste everyone’s time? Giggles? if you aren’t going to challenge the student then why bother?

I remember this final exam we had in one of my univ classes. I note that in that class, (it was the most bizarre class I will have ever taken btw) we learned various methods of what seemed at first to be divination of the correct answer. Once the principles being relied upon were made clear to some few of us we could do the problems in our heads, just as the teacher did. Many students, probably more than half did not understand what was going on and to this day I do not blame them. It almost felt like an intuition to be able to arrive at the proper answer.

In any event, final day came, the problem was on the sheet of paper. And the answer was one greek letter with a negative in front of it. This one letter with a negative in front of it determined pretty much your entire grade for the class. He fully expected everyone in the class to be done in 5 minutes and said as much. Of course very few were.

Many people did not come out of that class with a good grade. I saw the right answer, went over my reasoning several times in my head and made a 100 in like 2 minutes. 1 out of 2 in the class. There were a lot of 90’s, and lot of 50’s and a lot of 0’s and one 95. Many people didn’t understand that you needed a negative and just put the greek letter, while others had no clue w t f the answer was so they blabbered and got a 50, others blabbered unconvincingly or didn’t bothere to try and got a 0, and the one person put the greek letter down with the negative but blabbered incorrectly so got a 95. I loled at that guy.

In any event, we never did learn the “long hand” way of working those problems in that class, and the teacher of the next class that came after it and relied upon us knowing how to do it was flabbergasted that we never learned how to do it in the previous class. We had to be taught the basic way in the next class, which of course took up time in that class.

Some few of us realized that we were taught on the mastery level before we were taught on the elementary level. I will never forget those classes. To this day I still think that’s the best testing method. Make the question so hard that unless the student knows how to reason it out then they have practically no chance to get the correct answer. But if they do, then say fine, you’re good to go. Usually it is best to not make this a yes/no question though.

“The purpose of an exam is not to make a conclusory statement that you understand the material. It’s to demonstrate to the examiner that you understand the material.”

Most places they give you these things that are called “problems” and you’re supposed to “solve” them. That is your demonstration. Not demonstrating that you know how to demonstrate how to demonstrate how to solve the problem.

“An application for patent is essentially a question of “is this patentable? Y/N”. Have your rejections ever consisted in their entirety of the word “no”?”

You would not believe how sorely tempted I have been to do this sometimes. It is rare, but I give them a sentence. A really short one with a lot of fancy terms. For a lot of claims. With like 2 citations. And then I lolz when they amend or abandon. Some spes prefer this. Mine tolerates it in egregious cases but is not a big fan. I’m not a big fan either but sometimes peps need to get srs. You might be surprised how far out some applicants will drag what should be a simple claim out in dependents and wordiness.

I guess I forgot that human beings live, breathe and die according to the strict laws of Econ 101.

They do in the context of commercial success as a secondary consideration. Which you know I think is ridiculous, but assuming that it isn’t, the important thing is that people are buying the difference in the product rather than a slick marketing campaign or whichever one happens to be cheaper on the day.

Unless, of course, the slick marketing campaign is “chemical-free whitening process”, which is the invention itself. Or unless being cheaper is the whole point of the invention.

6: I was aware they might have wanted some reasoning, but they didn’t request it to my knowledge. Just because you lawlschoolers are used to it doesn’t mean that it is a given for the rest of the world.

The purpose of an exam is not to make a conclusory statement that you understand the material. It’s to demonstrate to the examiner that you understand the material.

Much in the same way, incidentally, that the purpose of patent prosecution is not to present a patentable claim but to demonstrate to the examiner that you have a patentable claim. That’s why you don’t accept “yes, actually it is patentable” as responsive to your rejections.

An application for patent is essentially a question of “is this patentable? Y/N”. Have your rejections ever consisted in their entirety of the word “no”?

Malcolm: The commercial success of an allegedly infringing product is therefore going to be insufficiently related to “the invention” to qualify as an indicia of non-obviousness.

Not necessarily. As long as the commercial success is related to the difference between the invention and the prior art (one is irradiated, the other is chemically bleached), he’s good to go. Heck, if they’re buying it in preference even though it’s more expensive, that’s all the more evidence that people are buying the (perceived) utility of the new invention. Cost reduction was never a recited utility anyway.

He’s not going to be able to present evidence of commercial success as a secondary indicia of non-obviousness.

Because he won’t have access to StickCo’s sales figures?

No, because “[o]rdinary chopsticks are actually cheaper to produce and safer to use than Suresh’s irradiated chopsticks.” The commercial success of an allegedly infringing product is therefore going to be insufficiently related to “the invention” to qualify as an indicia of non-obviousness.

6, Anon is right. No matter how the questions are phrased, on law school exams, it is how you arrive at your answer that matters. In fact, if you go through a very thorough reasoning, the actual outcome will hardly change your grade at all. If your reasoning/citation to legal principals is sound, you could leave off your answer and still get an A (or A+ at most law schools nowadays).

It’s much better to have a good, well reasoned discussion of the issues with an incorrect conclusion than a “correct” answer with poor reasoning.

Lulz, my inability to understand the context? No, I understand it just fine, it just wasn’t provided beforehand.

I was aware they might have wanted some reasoning, but they didn’t request it to my knowledge. Just because you lawlschoolers are used to it doesn’t mean that it is a given for the rest of the world.

What this is, however, is simply a case of you not liking that I roflpwnt a lawlschool test. And would have still roflpwnt it, albeit perhaps in around 15 minutes, if I bothered to blabber on about my reasoning.

Where I come from, if they give you a question that is answerable with a yes/no then they expect you to know it and move on to a new question. If they want you to dawdle and blabber then they ask you to dawdle and blabber. Or they issue oral instructions.

It is not a matter of getting defensive at all, 6. It is plainly a matter of your inability to understand the context of the situation. There simply is no such thing as a Yes/No answer on a law school exam.

lulz. Just because I pwnt ur little test in under 10 minutes doesn’t mean you have to get all defensive. The questions where plainly meant to be yes/no. I could have expounded upon them if the directions indicated such was requested.

I wouldn’t be too harsh in my fake grading for such a fake student, but your bravado compels me to be “just”.

You receive zero points for any one word answers.

You did remember the premise of this little game, did you not? A law school exam is not like an ordinary exam. While you would know this if you actually make it to law school, your grade of F is justly deserved as recompense for your arrogance (which is not deserved).

1. 102(b) statutory bar trigger – Doesn’t matter. The defense will beat Suresh down emotionally over this using his actions at that time so that even if Suresh wins, he loses and will be scarred emotionally for the rest of his life.

2. Suresh’s invention nonobvious? – All power to the USPTO gods once the patent issues.

3. Suresh’s former employer rights. Employer needed an IP contract. Employer may have rights in the original prototypes (it’s the employer’s radiation and employee’s time in those sticks).

6. Blue Violet laser infringe Suresh’s patent. When Suresh’s file his patent, he only had eyes on StickCo so the claims likely were zeroed on that. Also, given his delay, public disclosure, and narrow experience with lasers, he probably didn’t tell his patent practitioner about other lasers. Same with chemical treatment.

7. Yes, Suresh make a mistake by failing to tell the PTO how he came-up with his invention. See 1. above. The defense will beat Suresh down emotionally over this as well, even if he did tell the PTO how he came-up with his invention.

8. The application should have included the dentistry LASER, a general definition of LASER, and a list of example photon emitters. Likely, treating eating utensils via UV is known and it would have been a bad idea to try to go too broad.

9. “We often think of patents as intended to encourage innovation.” We who? Patents are only to exclude others from making, using, or selling. Anything else is icing on the cake. The government only expects to build its database of knowledge, so it doesn’t matter whether zero or much expense is put into the patent app.

10. Other patent law issues: Paying his patent lawyers and suing them when he loses or doesn’t win enough to cover his expenses. And then suing his attorney negligence lawyers when the fail to win aganist former patent lawyers.

2.Based on the prior state-of-the-art discussed, is Suresh’s invention nonobvious?

yes.

3.Does Suresh’s former employer have any claim to rights in the invention?

not that the hypothetical makes clear. Unless Suresh has some contractual (or other, perhaps sexual? lulz jk) obligation to assign rights to him there is no apparent claim his former employer would have.

4.Assume that StickCo can prove an invention date of January 1, 2006. Does StickCo have a credible argument under 35 U.S.C. §102(g) that Suresh’s patent is invalid?

The only one giving me trouble as I have never bothered much with this subject. Off hand it appears to be no.

5.Assuming that StickCo’s version of the chopsticks infringe Suresh’s patent, but that StickCo does not have enough money to pay the damages. What other parties could be held liable for the infringement?

None, unless you’re an arse. In which case, perhaps the company(s) selling the UV lasers or unbleached chopsticks induced infringement. Or other people making UV laser bleached chopsticks infringed?

6.Two other similar products were recently released by another manufacturer: (i) A UV LASER treated chopstick that is dark brown in color and that is also chemically treated; (ii) a chopstick that is treated with a BLUE-VIOLET LASER rather than an ULTRA-VIOLET (UV) LASER. Do either of these infringe Suresh’s patent?

yes, potentially
(i) this one might if the chopstick that ends up a dark brown was originally darker brown or black prior to the treatment, otherwise no. Also the spec might preempt a finding of infringement here by limiting the term “whitening” to something along the lines of “actually making the product white” as opposed to “making lighter in color” or similar.

(ii) no this one does not literally infringe. Unless blue-violet lasers also emit a uv laser beam inherently as well as the blue-violet light. So far as I know, they do not. One might could get tricky dicky about things and go all doctrine of equivs but I doubt it.

7.Patent Office rules require inventors to provide the USPTO with “all information known to be material to patentability.” 37 C.F.R. § 1.56. Did Suresh make a mistake by failing to tell the PTO how he came-up with his invention?

no.

8.When Suresh filed his patent application, the only LASER he had used was the UV LASER from his dentist’s office. However, he was confident that other LASERs would probably work just as well, if not better. (i) In the patent application should he have discussed the dentistry LASER? (ii) What about the other (untested) LASERs? (iii) Could Suresh broadly patent “the use of UV LASER radiation to treat an eating utensil, without being limited to the specific machinery or parts of machinery described in the foregoing specification?”

(i) nah, best mode is what he says it is not what an objective inquiry says it is lulz.
(ii) if he wanted to, otherwise nope.
(iii) not in those words, but properly claimed, yes, assuming no new prior art than that discussed. Being carefull while drafting to avoid possible 101 issues with abstract ideas.

9.We often think of patents as intended to encourage innovation. Does the granting of patent rights in situations like this (serendipitous invention) do anything to encourage innovation? You might distinguish between this case and one where the patentee conducted an expensive research and development program before inventing.

yes, theoretically. In reality probably not.

10.Are there other patent law issues that should concern Suresh? (Limit your discussion to at-most two additional issues)?

yes, his non-disclosure of the other company making/using/selling in his app might be an issue since it seems he knew about it but didn’t disclose.

and second, he needs to learn how to properly draft an application in order to obtain the most benefit from it.

Don’t be too harsh in your fake grading. Took me around 10 mins to do. If I was a lawlstudent I expect it should have taken around 8.

As a side note it was recently found that using UV-laser treated whitened chopsticks causes cancer.

Then your students unleash with the shotgun regurgitation of buzzwords and hedging we all know and love for each of the issues they spot.

Haha … ugh … thank goodness that is over.

Oh, and for the commenter that says this is not akin to real-life practice … I say “thank goodness.” Can you imagine that client coming in. That’s quite the dilemma I would tell him. I know just the guy to help you. It’s my arch nemesis who also happens to be a patent attorney. Bwahahaha.

Glad to see possible U.S. 102(g) and 102(g)/103 issues raised Dennis, since that seems to be one of the less understood areas of U.S. patent law [outside of the very small number of interference experts.]
Did the red-herring “shop rights” issue get extra credit?

So many of these questions are unanswerable for a lack of detail, that what they require is a rambling exploration of patent law, a “demonstration” of knowledge, with some facsimile of an abbreviated analysis.

Typical law school questions, not at all like situations I experience in practice, and not at all like situations present themselves. So much more information is needed to approach a meaningful answer/opinion.

The invention was not “serendipitous”. It was not something that had already occurred, and that just happened to be noticed by the inventor. It was not the product of “accident” or “happenstance”, it was the product of a cognitive association occurring solely in the mind of the inventor.